In contrast, trademark law has not been subjected to a broadening of secondary liability in recent years, even though digital technologies pose just as much a threat to trademark holders, Bartholomew and Tehranian point out. The divergent path of copyright and trademark law has "created tremendous legal uncertainty that threatens the investment in new technologies," they say.

In creating a double standard for copyright and trademark law the courts appear to have been influenced by the "romantic nature" of copyright law, Bartholomew says. "It's romantic to think about someone writing the great American novel or producing a hit song," he explains, "and the people who appeal for protection of these rights -- authors, movie stars, musicians -- are themselves very appealing."

When these romantic notions are combined with fears of widespread digital theft you get "copyright panic," Bartholomew contends.

Trademark law, on the other hand, rarely gets the Hollywood treatment and has not succumbed to the same irrational behavior, Bartholomew points out.

"Nobody feels so romantic about trademarks. These cases usually involve big corporations, ad people and sales people who are not as appealing of a plaintiff as a Carlos Santana or Don Henley. That's why the court has been able to resist expanding trademark law."

Interesting theory. I'll have to run down to the law library to read the law review.

Note: the University of Buffalo News Release contain this secondary headline: "Drab trademark law spared similar legal tinkering, law review article points out." So trademark law is drab and unromantic. I don't know if I should be offended or not : )

Monday, February 19, 2007

I recently took an online survey from a branding company asking my opinion about a series of potential brands for the branding company's client's new product. Ever the inquisitive sort, I checked the PTO website to see if any of these marks have been submitted for registration. A sampling of the few distinctive names in the list revealed that they were not submitted.

That's when my evil mind and overactive imagination kicked in. What if someone who took the survey proceeded to submit intent to use applications of the names found in the survey? That's probably not likely because of the expense involved. The survey I took had close to 30 potential brand names. But, they could get the domain names if available. Those are relatively cheap.

I recall that before I took the survey I had to agree to keeping the potential names confidential. Unfortunately, I didn't think about printing the confidentiality language and the system would not let me navigate backwards.

Suggestions to naming and branding companies that conduct online surveys:

Make sure your confidentiality agreements also require the survey takers to not use the potential brands as their own trademark or in domain names

Make sure your system captures the name and other identifying information of the individuals taking the survey

Retain the survey taker's electronic assent to the confidentiality agreement

Make sure competitors are not taking the survey

Consider grabbing the domain names, if available

Consider having your client apply for intent to use applications with the PTO on some of the potential brand names [HEY NOW, trademark attorneys have to eat too : )]

From a being nosy (aka competitive intelligence) prespective, it's interesting that AE subsidiary Retail Licensing Company is the owner of the trademark, but American Eagle Outfitter owns the various AE marks.

The United States Patent and Trademark Office have allowed for the registration trademark on one of our core emission control devices, the "DynoValve." The registration number for our DynoValve emission control product is 3204740. The trademark is officially effective on January 30, 2007.

"With our newly trademark registration for the DynoValve and our trademark registration of the DynoValvePro this past November addresses that Savi is fully committed to the name brand protection of our emission control product assets on a long term basis," stated Steve Botkin, Chief Information Officer of SaVi Media Group, Inc.

This is generally a nice release, however it implies, like all of the other press releases I've seen, that SaVi's trademark rights begin on the effective date of registration: "The trademark is officially effective on January 30, 2007." The press agent could have simply said that the registration is effective on January 30, 2007.

Federal trademark registration may be the basis to be awarded treble (triple) damages;

Federal trademark registration establishes the presumptive right of the trademark owner to use the trademark throughout the country;

The presumptive right can become incontestable with five years of continuous use and the filing of and acceptance of a declaration of incontestability;

Other companies that conduct a trademark search prior to adopting a trademark would most likely not adopt a mark exactly the same or similar to the company's trademark;

A registration on the Principal Register (but not Supplemental Register) may be deposited at the U.S. Custom Service to bar importation of goods bearing an infringing trademark;

A registration on the Principal Register can be the basis for the seizure of counterfeit or infringing merchandise;

A federal trademark registration may be used as collateral to secure a loan because a trademark registration is viewed as the embodiment of the goodwill symbolized by the trademark; and

For those companies that wish to expand internationally, the date of registration may be used as the priority date in other countries, if they are a member of an international treaty, such as the Paris Convention.

Assuming no conflict, for the relatively low cost of registration as compared to the value of the trademark, registration is a no brainer.

Thursday, February 15, 2007

That's the debate going on over at Heinz. This Brandweek story details how in 2004, Heinz pulled the plug on ketchup advertising, yet after a 2006 ketchup bottle redesign, ketchup consumption went up 78%.

But now, Heinz is about to embark on "one of the largest TV campaigns behind the flagship Heinz Ketchup brand since the 'Anticipation' spots of the 1970s."

Food analyst John McMillin of Prudential Securities welcomed the move. "Advertising is the lifeblood of brands. The lack of it represents a risk for long-term success," he said. "I'm pleased that Heinz is having success with in-store promotions. But you're only as good as your next promotion."

Still, the power of packaging can't be underestimated, said Ghansham Panjabi, a packaging analyst at Wachovia Securities: "When consumers see the Heinz logo on the fridge door every time they open it, it's taking marketing inside homes."

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Monday, February 12, 2007

IHOP Corp. (NYSE: IHP) today disclosed that it has become aware of issues relating to the lapsing of certain IHOP federal trademark and service mark registrations on file with the United States Patent and Trademark Office. As a consequence of the lapsing of these registrations, IHOP's Uniform Franchise Offering Circular ("UFOC") must be revised.

***

IHOP is in the process of taking the steps necessary to obtain new registrations for the affected trademarks and service marks. Additionally, IHOP has temporarily stopped offering franchises pending revisions to the UFOC and receipt of attendant state regulatory approvals. The Company anticipates that the corrective measures required to resume offering franchises in 45 states will be completed very shortly and within the next few weeks with respect to the five remaining states; however, there can be no assurance that all requisite regulatory approvals will be obtained within this time frame.

The Company has not yet determined the extent or financial impact of the corrective measures, but believes that any issues regarding the validity of its federal trademark and service mark registrations will not have a material impact on the business of IHOP Corp. or its franchisees.

That (temporarily suspending the offering of franchises) is a pretty serious consequence to lapsed filings.

Also, Reuters reported that the lapsed registrations caused IHOP to delay a planned refinancing of the company, which was to be used to pay down debt and buy back shares.

For the record, IHOP has 23 live applications or registrations {(ihop or "international house of pancakes")[on] and (live)[ld]} and 28 dead applications or registrations {(ihop or "international house of pancakes")[on] and (dead)[ld]}. [video explanation on how to run the searches] .

The Seattle Trademark Lawyer has an excellent post on the lessons many bands learn the hard way, that is having to change their band's name after they receive a cease and desist letter from another band (or their attorney):

Friday, February 2, 2007

According to WTHR, the NFL sent the Fall Creek Baptist Church a cease and desist letter for its plans of having a Super Bowl party. The NFL based it's letter on trademark and copyright law.

Mixing denominations, but if the NFL went to confession, they'd be told to say three Hail Marys. Maybe in a bit of poetic justice, since the Church is located in Indianapolis, the Colts will win on a hail mary pass.

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About TM Branding Cap

Welcome to the TM Branding Cap, aka TMBC. My name is Alvin Borromeo. And I am the sole writer, editor and publisher of the TMBC. I work for a software company, but not as its attorney. The opinions and comments expressed here are mine and not that of my employer.